The San Jose Mercury wrote of the Stanford-Roche tussle before the Supreme Court:

The question is this: Do patents on inventions that arise from federally funded research go to the university where the inventor worked? That is Stanford's assertion.

Or is that claim trumped by a side agreement between an inventor and a private company? That is the argument made by Roche, whose lucrative test flowed from the Stanford's professor's research.

The decision, expected in June, will clarify a landmark 1980 law that allocates patent rights among the government, investors and research institutions. These inventions arise from hundreds of billions of dollars in federally funded research projects -- and generate much more in profits.

This is not a correct discussion of the issue. Inventions, under US patent law, belong to inventors. If they are under an obligation to assign their rights at the time of invention, then ownership passes to the assignee. Stanford did not have the proper wording in their assignment, and did not create an obligation to assign at the time of invention. Stanford's back up plan is that the government (via the Bayh-Dole Act) owned the invention. Cetus (succeeded by Roche) had an assignment in the proper form. Is it trumped by government ownership via the Bayh-Dole Act?

Elsewhere in the article:

Stanford argues that Holodniy's ability to sign away Stanford's rights is constrained by the Bayh-Dole Act. Essentially, Holodniy had no patent rights to assign to Cetus, because the university retained title to the inventions under the act, Stanford contends.

Because a "protective order" issued by the court shields Roche's financial information, Stanford has not calculated the potential royalties.

But Stanford's senior university counsel, Patrick H. Dunkley, said the dispute is not about money.

"The reality is that the matter before the Supreme Court has nothing to do with the amount Stanford could receive if it wins the case," Dunkley said.

"The issue we are pursuing in the Supreme Court is really an attempt to right a wrong by the federal Circuit Court of Appeals that, if left uncorrected, would jeopardize intellectual property rights for inventors, universities and the federal government in any federally funded research subject to the Bayh-Dole Act," he said.

Agreeing with Stanford, Bayh-Dole Act co-sponsor former U.S. Sen. Birch Bayh wrote that "Congress did not provide for individual inventors to have transferable ownership interests in patentable inventions created with federal funding."

IPBiz notes that if Stanford had given Holodniy a proper form to fill out, none of this would have happened, and, as long as proper forms are used, there is no jeopardy to intellectual property rights for inventors, universities and the federal government.

McElroy's brainpower still has the potential be taken as a negative around the league, as explained by Pro Football Talk's Mike Florio:

That said, scoring too high can be as much of a problem as scoring too low. Football coaches want to command the locker room. Being smarter than the individual players makes that easier. Having a guy in the locker room who may be smarter than every member of the coaching staff can be viewed as a problem — or at a minimum as a threat to the egos of the men who hope to be able when necessary to outsmart the players, especially when trying in some way to manipulate them.

So while McElroy, who was unable to work out due to injury, may be really smart, he perhaps would have been wise to tank a few of the answers.

Argh: Too smart! If only there was some widely accepted sweet spot of "kind of dumb, but not alarmingly dumb" that prospects knew to shoot for.

That response shouldn't come as a surprise from the same league that took the academic success of Florida State safety Myron Rolle – who actually earned a Rhodes scholarship, and took a year off from football to pursue it –as an opportunity to question his commitment to a gridiron career.

Note that IPBiz has written of Myron Rolle before.

As to "a threat to the egos," this point is not just about football coaches.

Sunday, February 27, 2011

The bill also would increase protections for those with legitimate gripes. Third parties, currently shut out of the process, would be given clear rules and time limits to challenge patents that have not yet been approved. They'd also have a chance to lodge objections after a patent has been granted; the U.S. Patent and Trademark Office (PTO) would resolve these disputes. This safety valve should reduce the litigation costs associated with court challenges.

IPBiz notes Rule 99 allows third parties to present relevant art to the USPTO during prosecution. Third parties are NOT currently shut out of the process.

IPBiz notes we currently have re-exams to challenge issued patents based on art.

CBS Sunday Morning on February 27, 2011

Charles Osgood introduced the stories for CBS Sunday Morning for February 27, 2011. Tonight is Oscar night. The tear jerker is now a rarity. Mo Rocca does the cover story, with an appearance by James Caan. Second story by Rita Braver on photographer Herb Ritts. Third story on Vidal Sassoon ("Shear Genius"). Fourth story by Bill Geist on the Razzies. Hollywood location scouts, John LeCarre.

Headlines started with Libya, rebels setting up new government, UN Security council sanctions. Rebel government setting up in Benghazi. One third of Libyans live in Tripoli, the capital and Khadaffi's stronghold. Second story on the death of two people in Oman. Yemen. Third story: demonstrations about collective bargaining by guv workers. fourth story: Dave Duerson. fifth: Discovery. Sixth: snow in southern California.

Weather: early storms in northeast.

The first piece was "Sob Story." Demi Moore appeared first in a clip from Ghost. "Sleepless in Seattle" appeared, with the producer Linda. Women are treated as a niche audience. 52% of movie tickets go to women. Now, Hollywood is making movies for young men. Many of the movies are based on comic books. The foreign market is the biggest part of the business. Pixar made Up and Toy Story 3. James Caan was interviewed, about 1971's Brian's Song. The first bromance. Then, Terms of Endearment.

Almanac. Feb. 27, 1932, the date of birth of Elizabeth Taylor. National Velvet at the age of 12. 1961: Butterfield 8. Then, Cleopatra. Virginia Woolf. I do not attack the soft spot in the underbelly. Awarded Kennedy Center Honor in 2002.

Herb Ritts died 9 years ago at age 50, but his work is getting a close-up. A new kind of glamour photography. Photo of Richard Gere in 1978 at a gas station. Cindy Crawford and Richard Gere met at a Ritts party. Naked Twister. Madonna Cherish video. "In the Closet" for Michael Jackson. k.d. lang and Ritts on Vanity Fair cover in 1993. Masai warriors. Ben Affleck for Vanity Fair.

David Edelstein described the Golden Globes as bad community theater. He illustrated the profusion of awards with the fictional: Pregnant Vegans Choice. Colin Firth: A lock locked in a lock. Predictions: King's Speech will win best picture. (Edelstein's personal preference: Winter's Bone] Best actor: Colin Firth. Best actress: Natalie Portman. Supporting actor: Christian Bale.

John LeCarre gives his last American interview. Stepping off the publicity treadmill. Turn ideas into pages. His wife Jane is his first sounding board. Alec Guinness as George Smiley. Richard Burton as the spy who came in from the cold. The Looking Glass War. The Russia House. Tinker Tailor Soldier Spy (Gary Oldman). Gray army of spooks. Oh Christ I hope I'm not him. The little drummer girl. The constant gardener (Dypraxa). Our kind of traitor. The immoral corporate world. banking system: socially useless. The excesses of capitalism. I'm in the business of story telling. On the website: the doors are closed.

Product placement. Brandchannel website. Apple showed up in 10 of 33 box office hits. Product in single film. ironman 2, 64.Prius in "the other guys". Worst product placement given to Wall Street: Money Never Sleeps. 43 placements including Dunkin Donuts and Borders. Glock handguns in 22 movies. In a brandchannel poll, 87% of responders said product placements are NOT ruining films.

Tracy Smith gives a Sunday Profile on Vidal Sassoon. Wash and Wear. The respect wasn't there. Sassooning (meant nothing).Documentary: Vidal Sasson: the movie. And an autobiography. Started at age 14 as a shampoo boy. Sassoon believed he, not the customer, was always right. Of vision: that's the only thing I had. Mia Farrow: Rosemary's Baby. "She got me involved in middle America." Issue of imitators. "I was a terrible family man." "You have had a phenomenal adventure in life."

Opinion. Do wear a proper gown. Licensed cleavage engineer. Misuse of double sided tape is a federal crime. Names of all 117 of your lawyers.

Pulse. 74% like to watch movies at home (as distinct from a theater).

Bill Geist. John Wilson heads the Razzies. Ashton Kutcher won worst actor for Killers and Valentines Day. Worst Actress went to all 4 in Sex in the City-II. Sylvester Stallone has ten Razzies. Halle Berry attended in 2005 for Catwoman. Sandra Bulloch for All about Steve. Worst picture: The Last Airbender.

Saturday, February 26, 2011

From time-to-time, IPBiz has done posts on bra-related patents (eg, http://ipbiz.blogspot.com/2009/06/heather-knox-sues-victorias-secret-over.html).From time-to-time, IPBiz has covered misstatements in the media.

On February 25, 2011, Philadelphia's KYW Channel 3 presented a most interesting assertion:

Susie Arazy, an owner of a lingerie shop, says the average bra size in the U-S is a 36 Double-D, but it’s estimated 80 percent of ladies are laced up with the wrong size.Now they’ll have more selection in the larger size that Susie says are pretty too.

The product being publicized by KYW: The maker of the L-Cup Alana bra says it gives more support and comfort than their previous Double-K.

Although the average bra size is often quoted as 36C, most people who wear this size should actually be wearing either a 34D, 34DD, 32DD or 32E bra. The true average bra size is around 34DD.[2]

But where does footnote [2] come from? If you guessed: # ↑ The Perfect Fit - Bravissimo , you would be correct. [In passing, the wikihow site has ads to Patent Attorney/Engineer Over 36 years experience. Staff available 24/7 by phone.www.invention.net ]

The first claim of published US application 20110045556 (titled ALGAL LIPID HARVEST USING MOLLUSKS FOR BIOFUELS PRODUCTION ) states

A method of generating a biofuel from an algal-based cultural system, comprising:culturing a population of mollusks and a population of algal cells in a culture system suitable for maintaining the viability and proliferation of the mollusks and proliferation of the algal cells;allowing the population of the mollusks to isolate a proportion of the algal cells from the cultural system, thereby generating an amount of a molluscan pseudofecal algal-based particulate material;isolating said pseudofecal particulate material from the culture system; andgenerating a biofuel from the isolated pseudofecal particulate material.

Within the background section, one has the text:

Microalgae offer great promise to contribute a significant portion of the renewable fuels that will be required to meet the U.S. biofuel production target of 36 billion gallons by 2022, as mandated in the Energy Independence and Security Act of 2007 under the Renewable Fuels Standard. In the longer term, biofuels derived from algae represent an opportunity to dramatically impact the U.S. energy supply for transportation fuels. The cultivation of algae at a commercial scale could provide sufficient fuel feedstock to meet the transportation fuels needs of the entire United States, while being completely compatible with the existing transportation fuel infrastructure. Further, algal biofuels could prove sustainable for generations--they consume CO.sub.2 as a nutrient, have a much higher yield potential than other terrestrial biomass feedstocks, and can be grown with non-fresh water sources without needing to use high-value arable land. However, despite their huge potential, the state of technology for producing algal biofuels is regarded by many in the field to be in its infancy. There is a general consensus that a considerable amount of research needs to be carried out to produce algal-based fuels sustainably and economically enough to be cost-competitive with petroleum-based fuels.

On first named inventor Keshav C. Das:

* Professor of Engineering at University of Georgia * Director -- Biorefinery and Carbon Cycling Program at University of Georgia

***Separately, note published US application 20110045593 titled Transgenically mitigating the establishment and spread of transgenic algae in natural ecosystems by suppressing the activity of carbonic anhydrase with first claim:

A method to mitigate the effects of introgression of a genetically engineered advantageous genetic trait of cultivated algae or cyanobacteria to its wild type or to an interbreeding related species such that a mitigated algae or cyanobacteria cannot establish populations outside of cultivation, said method comprising the steps of:a) introducing into the algae or cyanobacteria genome at least one gene encoding the advantageous trait in tandem with at least one gene encoding a mitigating trait;said at least one mitigating trait comprising suppressed activity of carbon concentrating mechanism; andb) cultivating the algae or cyanobacteria under above-ambient CO.sub.2 concentrations whereby the suppressed activity of carbon concentrating mechanism does not affect photosynthesis, and the algae or cyanobacteria carrying the low carbon concentrating mechanism activity die outside of cultivation as a result of insufficient CO.sub.2 concentrating capacity.

first claim: A method to mitigate effects of release of at least one advantageous genetically engineered trait of an alga or a cyanobacterium into natural ecosystems, said method comprising a step of transforming an alga or a cyanobacterium to express said at least one advantageous genetically engineered trait, and at least one mitigating genetic trait, wherein: said at least one advantageous genetically engineered trait is encoded by at least one advantageous gene, and said at least one advantageous gene being operably linked with promoter sequences, and said at least one mitigating genetic trait is encoded by at least one mitigating gene, said at least one mitigating gene being optionally operably linked with promoter sequences; and said at least one advantageous gene and said at least one mitigating gene being introduced into the alga or cyanobacterium in tandem, whereby encoding sequences of the advantageous and mitigating genes remain genetically linked in the transgenic alga or cyanobacterium; and said at least one mitigating gene further being desirable in or neutral to the transgenic alga or cyanobacterium when cultivated but rendering the transgenic alga or cyanobacterium incapable of establishing itself or its introgressed offspring in natural ecosystems.

***SeparatelyUS published application 20110045564 titled METHOD OF ENHANCED SUSTAINABLE PRODUCTION OF ALGAL BIO-PRODUCTS, COMPRISING USE OF SYMBIOTIC DIAZOTROPH-ATTENUATED STRESS CO-CULTIVATION

Friday, February 25, 2011

Against S.23

I urge you to vote AGAINST S.23, the Intellectual Property Jurisdiction Clarification Act of 2011 .

The "first inventor to file" provision is against the interests of small inventors and of academic inventors.

The "post grant review" provision is also against the interests of small inventors and of academic inventors, and is separately contrary to the basic teachings on quality of Deming. If there is a problem in the "quality" of some issued patents, the proper remedy is to correct the examination procedure, not to add an inspection step. The diversion of money from the USPTO to the general fund, which cripples the patent examination process, should stop.

Lawrence B. Ebert, Ph.D., J.D.author of the IPBiz blog

AlsoPatent Reform as Three Card Montehttp://ipbiz.blogspot.com/2011/01/s23-on-patent-reform-introduced-on.htmlhttp://ipbiz.blogspot.com/2011/02/s23-patent-reform-to-be-taken-up-around.html

Talking about Watson's appearance on the television show Jeopardy, Elman noted:

Yet, isn’t it time that the society with the most powerful information technology in human history provide to those persons, examiners at the PTO, a tool that presents an organized report of the prior art that’s most pertinent to each element of each claim under examination? In effect, it would be an automated version of the Examination Support Document (“ESD”) that in 2007, the Dudas-led PTO had announced it would require many patent applicants to generate.

Elman concluded:

Until the PTO provides a Watson-like analytical infrastructure, it seems to me that the whole patenting process will remain in jeopardy.

A footnote: Gerry Elman and LBE both hold a B.S. degrees from the University of Chicago, and both hold M.S. degrees from Stanford. Jon Dudas and LBE both hold J.D. degrees from the University of Chicago.

Another footnote: in the expedited prosecution for green technology program, one has an "Accelerated Examination Support Document" [AESD] provided by the applicant

Thursday, February 24, 2011

It's Philo Farnsworth all over

CSI on February 24, 2011 had several inventorship allusions. In addition to the reference to Philo Farnsworth, there was a reference to standing on my shoulders like vultures, looking for carrion.

The invention? Maybe re-animation of the dead. The episode title: "Turn On, Tune In, Drop Dead". Howard Hesseman as Dr. Aden. ("He hasn't had this much excitement since Altamont.")

There's a sensory deprivation tank and an allusion to the movie "Altered States." On CSI finding a dead body in the tank, "maybe the tank wasn't his idea."

TTX. Tetrodotoxin. The EMT who misdiagnosed the dead/undead was threatened: "you'll find yourself unemployed." So, there really was not a re-animation but there might be an addition to the ranks of unemployed in Nevada.

The agency [ Mass. Life Sciences Center =MLSC]may now look to claw back the financial awards it gave to eight companies because they haven’t met a 70 percent job-creation threshold stipulated by the MLSC’s Tax Incentive Program, according to a report from the agency.

Whitehead, MIT and Max-Planck ultimately licensed their interest in the Tuschl I patent applications to Alnylam Phar-maceuticals, Inc. ("Alnylam") for therapeutic use. (Levine Aff., Ex. F.) UMass licensed its interest in the Tuschl I patent applications for therapeutic use to Alnylam's competitor, Sirna Therapeutics, which was later acquired by Merck & Co. (Id.) After these interests were licensed, disagreements arose among the co-assignees in late 2003 or early 2004 when Sirna asserted that it had access to certain technology that Max-Planck claimed was solely part of the Tuschl II invention. (Levine Aff., Ex. G at 459, 461 (Erselius Dep.).) The disagreement specifically pertained to the improper use of certain information and data relating to 3' overhangs (a particular species of short RNA molecules), which Max-Planck alleges were developed exclusively in connection with the Tuschl II invention and should not be included in the Tuschl I patent applications. (Mone Decl., Ex. 71 at 264-66, 331-32, 395 (Erselius Dep.); id., Ex. 72 at 54-59, 65-66, 68-69, 115, 315 (Lockhart Dep.).)

It is clear from the record that Wolf Greenfield could not have removed the contested data from the Tuschl I patent ap-plications over Whitehead's objection. It is undisputed that Whitehead was represented by Wolf Greenfield, and Wolf Greenfield would have committed legal malpractice by substantively altering a patent application without Whitehead's consent. Wolf Greenfield's actions related to the alleged refusal to delete the mammalian data and the priority claims did not cause Max-Planck's injury. The appropriate course of action once Wolf Greenfield became aware of the conflicting instructions from its joint clients, Whitehead and Max-Planck, would have been to withdraw from the Tuschl I patent prosecution. Wolf Greenfield did not withdraw, however, and Max-Planck subsequently incurred legal fees in connection with the preparation and litigation of the Goldstein petition before the USPTO. Max-Planck's damages in this case, at best, would cover the attorney's fees incurred as a result of Wolf Greenfield's refusal to withdraw. With respect to these fees, the defendant has not established that it is entitled to summary judgment on the issue of proximate causation.

HOWEVER, the cited case also states: The complaint in this case was filed on June 26, 2009, and the Court finds that Max-Planck was aware of appreciable harm caused by Wolf Greenfield's actions prior to June 26, 2006. Max-Planck's claims are time-barred.

Wednesday, February 23, 2011

In a key decision on the written description requirement of 35 USC 112, the CAFC wrote:

Because the asserted claims of the ’775 patent lack written description under 35 U.S.C. § 112, we need not reach Abbott’s other invalidity arguments, its infringement arguments, or the question of damages. We reverse the district court’s denial of JMOL on this ground and hold the asserted claims invalid for failure to meet the statutory writment.

Compliance with the written description requirement of 35 U.S.C. § 112, ¶ 1 is a ques- tion of fact, and “‘we review a jury’s determinations of facts relating to compliance with the written description requirement for substantial evidence.’” Id. at 1355 (quot- ing PIN/NIP, Inc. v. Platte Chem. Co., 304 F.3d 1235, 1243 (Fed. Cir. 2002)). A patent also can be held invalid for failure to meet the written description requirement based solely on the face of the patent specification. Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 927 (Fed. Cir. 2004); PIN/NIP, 304 F.3d at 1247-48 (reversing the district court’s denial of JMOL because no reasonable juror could have concluded that the asserted claim was supported by adequate written description).

And, yes, New York University lost the case on written descriptiongrounds, just as the University of Rochester did. And just as the academicsin the case Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1354 (Fed. Cir. 2010) also lost.

The CAFC elaborated that a plan for an invention is distinctfrom an invention itself:

To satisfy the written description requirement, “the applicant must ‘convey with reasonable clarity to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention,’ and demonstrate that by disclosure in the specification of the patent.” Carnegie Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir. 2008) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991)). Assessing such “possession as shown in the disclosure” requires “an objective inquiry into the four corners of the specification.” Ariad, 598 F.3d at 1351. Ultimately, “the specification must describe an invention understandable to [a person of ordinary skill in the art] and show that the inventor actually invented the invention claimed.” Id. A “mere wish or plan” for obtaining the claimed invention is not adequate written description. Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1566 (Fed. Cir. 1997).

The key issue in the case involved assertions of priority:

The pivotal issue in this case concerns whether the ’775 patent provides adequate written description for the claimed human variable regions. As noted above, Cento- cor first sought claims to human variable regions and fully-human antibodies in 2002. At that time, Abbott had already discovered and patented a fully-human antibody to TNF-α that had high affinity and neutralizing activity. To ensnare Abbott with later-filed claims, Centocor must use a priority date from an earlier application. Because Abbott’s application was filed in 1996, Centocor relies on a priority claim to the 1994 CIP applications. Thus, in order for Centocor to prevail, the asserted claims must be supported by adequate written description in the 1994 CIP applications.

Abbott's game plan was clear:

To underscore the inadequacy of Centocor’s written description, Abbott points out that the specification does not disclose any fully-human, high affinity, neutralizing, A2 specific antibody. Moreover, the specification does not disclose a single human variable region. Abbott argues that the only described antibody is the chimeric antibody, which has a mouse variable region. Abbott also argues that Centocor has merely disclosed tools that might be used in an attempt to make the claimed invention—essentially, that Centocor’s disclosure is no more than a mere wish or plan for how one might search for a fully-human antibody that satisfies the claims. Finally, Abbott points to testi- mony from Centocor’s inventor indicating that the disclo- sure did not include examples about making a human antibody because “it was never [Centocor’s] intention to make a human antibody.”

The punchline of the CAFC:

At bottom, the asserted claims constitute a wish list of properties that a fully-human, therapeutic TNF-α anti- body should have: high affinity, neutralizing activity, and the ability to bind in the same place as the mouse A2 antibody. The specification at best describes a plan for making fully-human antibodies and then identifying those that satisfy the claim limitations. But a “mere wish or plan” for obtaining the claimed invention is not suffi- cient. See id. at 1566. At the time the 1994 CIP applica- tions were filed, it was entirely possible that that no fully- human antibody existed that satisfied the claims. Be- cause Centocor had not invented a fully-human, high affinity, neutralizing, A2 specific antibody in 1994, reasonable jury could not conclude that it possessed one.

The end result:

We hold that claims 2, 3, 14, and 15 of the ’775 patent are invalid for lack of written description. The judgment below is reversed.

US 7,893,315: Derivation of embryonic stem cells and embryo-derived cells

The first claim of the ACT patent titled Derivation of embryonic stem cells and embryo-derived cells states:

An in vitro method of producing human embryonic stem (ES) cells from a blastomere, comprising:
(a) providing a blastomere isolated from a human embryo; (b) culturing the blastomere until said blastomere gives rise to a cluster of two or more progeny blastomeres; (c) culturing the cluster of two or more progeny blastomeres with human pluripotent cells to obtain a culture of human ES cells that originate from the cluster of progeny blastomeres; (d) isolating the human ES cells that originate from the cluster of progeny blastomeres of step (c).

A key part of the claim is the text:

culturing the blastomere until said blastomere gives rise to a cluster of two or more progeny blastomeres;

The background of the invention includes the text:

Additionally, certain members of the public object to embryonic stem (ES) cell research using cell lines derived from the inner cell mass of blastocysts because this derivation procedure destroys the preimplantation, blastocyst-stage embryo. As such, the blastocyst-stage embryo from which ES cells are conventionally produced cannot be cryopreserved, frozen for later use, or permitted to develop further.

The present invention provides novel methods for deriving ES cells, ES cell lines, and other embryo-derived (ED) cells for use in research and medicine. The methods described herein permit the derivation of ES cells, ES cell lines, and other ED cells from embryos but without the need to destroy those embryos.

The assignee of the invention is stated to be Advanced Cell Technology, Inc. (Marlborough, MA) . This company is sometimes referred to as ACT.

The stemcellreport keeps emphasizing the "ACT in Alameda" angle [eg, As for the physical location of the center and ACT, CGS is in Oakland which is linked by an underwater tunnel and draw bridges to the island (Alameda) in San Francisco Bay that houses ACT.] although ACT originated in Massachusetts and the work discussed in Nature and in the disputed press releases all comes from Massachusetts. ACT set up shop in California to benefit from the largesse of Proposition 71.

Another often-overlooked problem with CIPs is that their own parent applications can sometimes be used against them as prior art. Careful consideration must be given to avoiding this type of problem with a CIP application, as well.
For example, if further developments are not made promptly after filing the first parent application on an invention, the publication of that parent application starts a one-year clock running after which it will be used to reject further developments even by the same inventors.
If the claims of the CIP application are based on both the original disclosure and new matter, as is often the case, the claims must be even more carefully drafted than usual.
If you want to file claims based on closely related developments that are not patentably distinct from the claims in the parent application, a CIP application may be needed. This is sometimes the most beneficial course of action despite all the potential deficiencies of a CIP application.
On the other hand, if the new development is not sufficiently described in the parent application and is patentably distinct from the claims of the parent application, it is typically recommended to file a new application. This will ensure that the term of any patent that issues from the new application is maximized.
Yet another weakness of a CIP application was made clear in the PowerOasis v. T-Mobile decision issued recently by the U.S. Court of Appeals for the Federal Circuit. PowerOasis held that the presumption of validity given a patent does not extend to the question of priority in most CIP applications.

Noven, located in Miami and a subsidiary of Hisamitsu Pharmaceutical Co. , has filed a Hatch-Waxman suit against Mylan related to Mylan's proposed generic equivalent of Vivelle-Dot, a transdermal patch used to treat the symptoms associated with menopause.

Back in the day, victorious Pittsburgh Pirates from the World Series of 1960 invested in Mylan. But for a rock on the infield of Forbes Field, who knows?

Cholesterol fighter Lipitor held the title "best-selling drug" for a few years, and has been a major source of income for the world's biggest drug company, Pfizer (PFE). Lipitor (atorvastatin) was released in 1998, and by 2006 it had reached peak sales of $12.9 billion, accounting for 27% of the company's revenue. In 2010, with $10.8 billion in sales, Lipitor still accounted for 15.8% of total revenue, even with the addition of Wyeth's operations.

Cecil D. Quillen Jr. has an obsession about patent continuations and RCEs. Junior Q penned a paper on the topic back in 2002. Hal Wegner favorably reports on today's letter by Junior Q to the New York Times. Quillen: "Continuing applications claim inventions that are described in earlier filed parent applications, and thus, to a considerable extent, represent "rework" for the USPTO, since the inventions of the continuing applications were, or could have been, examined in the earlier parent applications."

IPBiz would have commented to Patent Prospector, but comments are not allowed there any more. There has been a historical connection on the continuation theme between Cecil Quillen and Harold Wegner.

Turning full circle, in his July 2007 paper on SSRN, Lemley effectively says (of the 97% business): just kidding guys; the number isn’t so high after all.

A separate point about the commentary on the "No problemo" at Patent Prospector related to Michael Martin's dissembling about the "Gary Boone invented the integrated circuit business." From a comment to No Problemo:

Michael Martin states that Prof. Lemley never claimed that Gary Boone invented the integrated circuit. For reference:

The integrated circuit was itself an improvement in the field of computing, a way of building transistors (an invention discussed above) [p. 612] directly into a computer chip by using charged silicon, a semiconductor. The invention opened up not just computing but also calculators, cell phones, and a host of other portable electronic devices. But because two different inventors working independently developed the integrated circuit at about the same time (1971), the patents were put into interference. Gary Boone was ultimately declared the winner, but not until 1999, twenty-eight years after the first patent application was filed.

Guys who think Gary Boone invented the integrated circuit are totally disconnected from patent reality. Anyone who thinks the Lemley text isn't about the invention of the integrated circuit is simply disconnected from reality.

Tuesday, February 22, 2011

Of the Markman results in the Dec. 2007 hearing in Biopolymer Engineering, Inc. v. Immunocorp and Biotec Pharmacon.

Note text:

As to the proposal of Immunocorp and Biotec regarding grinding, the disputed terms do not explicitly contain a grinding limitation. Accordingly, Immunocorp and Biotec rely on the specifications and prosecution histories to support their proposal. In construing claims, a court must not import limitations from a patent's specification. In re Trans Tex. Holdings Corp., 498 F.3d 1290, 1299 (Fed. Cir. 2007); Phillips, 415 F.3d at 1323. In general, methods of manufacture disclosed in a specification do not limit product claims:

It is generally true . . . that product claims are not limited to the methods of manufacture disclosed in the specification and that "[t]he method of manufacture, even when cited as advantageous, does not of itself convert product claims into claims limited to a particular process. . . . A novel product that meets the criteria of patentability is not limited to the process by which it was made." However, process steps can be treated as part of a product claim if the patentee has made clear that the process steps are an essential part of the claimed invention.

Sharon Barner has moved from her Deputy Director position at the USPTO back to Foley & Lardner.

Of her tenure at the USPTO (2009 to 2011), the Bradenton Herald notes:

During her tenure at the USPTO, Barner drove the creation of the “2010-2015 USPTO Strategic Plan,” which is designed to strengthen the capacity of the USPTO, shorten the time it takes to grant a patent, improve quality and, for the first time, includes development of a National Intellectual Property Strategy. While Deputy Under Secretary, she led 15 foreign missions, including trips to Brazil, China, India, Mexico, and Russia, to meet with representatives of government, academia and industry in order to raise awareness of the importance of intellectual property and the positive impact it has on a nation’s economic, social and cultural development. She was also integral in the creation of the USPTO’s first regional office, which is located in Detroit.

The article also noted:

“Much of Sharon’s work at the USPTO was focused on bringing the inner workings of Washington, D.C. to the national business community,” said Mark L. Prager, managing partner of Foley’s Chicago office. “She brings a unique business perspective to the IP policy discussion which will be a great asset to our clients.”

IPBiz had reported in October 2009:

Sharon R. Barner, who was head of IP at Foley & Lardner (and based in Chicago), has been named Deputy Director of the US patent office.

Coincidentally, it was Barner who announced the move of the previous USPTO director (Jon Dudas) to Foley & Lardner in Washington. Barner: “Jon brings a unique mix of talent and experience leveraging both his distinguished tenure within the federal government and his experience as a litigator established prior to his government service."

He [Harold C. Wegner of Foley & Lardner] said Professor Arti K. Rai of Duke University's law school, and Stanford University's Professor Mark Lemley were both involved in the Obama campaign.

Lemley is also of counsel to San Francisco's Keker & Van Nest, a litigation boutique with expertise in IP and criminal defense law.

Rai is best known for her research on IP issues relating to drug development and other bioscience areas.

Wegner also suggested James Pooley would play a role. Poole is a partner at San Francisco's Morrison & Foerster and the former president of the American Intellectual Property Law Association, a bar group for IP lawyers.

Sharon K. Barner, a Chicago-based Foley IP litigation partner, has also worked with the Obama team. She presently heads the firm's IP department.

The present under secretary of commerce for intellectual property and patent office director is Jon W. Dudas, a Bush- administration political appointee. Dudas served as counsel to the U.S. House Judiciary Subcommittee on Courts and Intellectual Property before he took the job with the patent office.

Monday, February 21, 2011

Ex Patica wrote on February 21, 2011 of the zu Guttenberg plagiarism business:

Chancellor Angela Merkel said Monday she had "full confidence" in her embattled defence minister, as a new Internet site suggested he had plagiarised around two-thirds of his legal thesis.

BUT

"Zu Guttenberg is no longer skating on thin ice. The ice has already cracked," the Sueddeutsche Zeitung wrote.

But the minister, dubbed "Baron Cut-And-Paste" and "Zu Googleberg" by a gleeful press, has won backing not only from Merkel but also Horst Seehofer, the head of his Bavarian CSU party.

The zu Guttenberg mess evokes a now-infamous saying of a Harvard Law Professor that the legal business involves a culture of plagiarism. Like they say in the Harvard Business Review [HBR]: plagiarize with pride.

Within a New York Times article titled Blogs Wane as the Young Drift to Sites Like Twitter is a suggestion of a decline in blogging.

One has the text:

Former bloggers said they were too busy to write lengthy posts and were uninspired by a lack of readers. Others said they had no interest in creating a blog because social networking did a good enough job keeping them in touch with friends and family.

BUT

“If you’re looking for substantive conversation, you turn to blogs,” Ms. Camahort Page said. “You aren’t going to find it on Facebook, and you aren’t going to find it in 140 characters on Twitter.”

AND an anecdote

Russ Steele, 72, a retired Air Force officer and aerospace worker from Nevada City, Calif., says he spends up to three hours a day seeking interesting topics and writing about them for his blog, NC Media Watch, which covers local issues in Nevada County, northeast of Sacramento. All he wants is to have a voice in the community for his conservative views.

Although he signed up for Facebook this month, Mr. Steele said he did not foresee using it much and said that he remained committed to blogging. “I’d rather spend my time writing up a blog analysis than a whole bunch of short paragraphs and then send them to people,” he said. “I don’t need to tell people I’m going to the grocery store.”

Meanwhile, at patenthawk.com/blog, on 17 Feb 2011:

This blog provides an educational service, a ready case law reference, and sharp commentary on patent events that simply don't appear elsewhere, all the while striving to make a bit of a hit by applying a bit of wit. It was never intended to be an open-ended forum for backbiting by anonymous kibbitzers. As Groucho Marx said, "those are my principles, and if you don't like them... well, I have others." Comments are no longer welcome here.

Fortunately, there aren't many comments here at IPBiz. Sadly, sites like the Stanford Daily and californiastemcellreport are a bit adverse to printing comments.

***Of a comment at Patently-O on 21 Feb 2011:

Babel Boy said...

Ned, I recall that Dennis had a post a while back in which he asked "Why do you use dependent claims?" or something of the sort. It struck me as one of those dumb questions that when you actually think about it, you don't have a good answer, which turns the dumb-pointing finger 180 degrees.

As I recall, there weren't a lot of good answers, certainly not from me, but it got me thinking, which is what these blogs are all about.

But let's do a hypothetical along your lines. I have sued you for infringing my claims 1 and 2. In litigation you produce prior art that knocks out my independent Claim 1 as obvious. Claim 2 is narrower, of course, but it adds nothing that is non-obvious over Claim 1. It was allowed only because it was the child of what was originally deemed non-obvious Claim 1.

So how does falling back on the obvious narrower claim help if the parent turns out to be obvious? If the child claim does not contribute something non-obvious over the parent claim, then merely being narrower is not gonna' save my bacon as a fall-back position.

IPBiz notes that if one merely adds, in the dependent claim, a claim element that was known at the time of filing and that element functions in a predictable way, such an addition is not very useful if the independent claim is found invalid. But if the known element does not function in a predictable way in the combination, then the dependent claim is useful.

I am writing to invite you to the Missouri Law Review's upcoming symposium that will be held here in Columbia at the University of Missouri School of Law on Friday, February 25, 2011. The focus of the event will be on the Jurisprudence of the Court of Appeals for the Federal Circuit – with a special emphasis on the Court's patent law jurisprudence. David Kappos (Director of the US Patent & Trademark Office) will deliver the Earl F. Nelson Lecture. We have a set of great speakers coming that include Mark Lemley (Stanford) and Peter Menell (Berkeley). Two Mizzou Law grads will be presenting – Jason Mudd ('05) who is now an attorney at Shook Hardy and Ryan Vacca ('04) who is now a law professor at Akron.

Speakers include Professors Lisa Dolak (Syracuse) and Elizabeth Winston (Catholic) who have both been closely involved with Federal Circuit activities for a number of years.

Within an article in the New York Times titled U.S. Sets 21st-Century Goal: Building a Better Patent Office by Edward Wyatt , one finds several images about time. There is a picture of Director Kappos holding an Edison model lightbulb, an invention of the 19th century.

Following mention of the USPTO's first satellite office in Detroit, one has text:

That is only one of the signs that have many critics saying that the office has its head firmly in the 20th century, if not the 19th.

The most intelligent comment in the article is buried at the end, on the second page:

Mr. Kappos is also pushing an initiative that would charge patent applicants a higher fee to guarantee that their applications will receive a ruling within a year. But that initiative and others are not enough, said Paul R. Michel, who recently retired as chief judge for the United States Court of Appeals for the Federal Circuit in Washington, the main forum for patent appeals.

“The office can’t be made efficient in 18 months without a vast increase in finances,” said Mr. Michel, who has made evangelizing for an overhaul of the office a pet cause. “Small efficiency improvements will only make a small difference in the problem.”

The article creates a metric of (applications pending)/(applications issued): Much of the patent office’s decline has occurred in the last 13 years, as the Internet age created a surge in applications. In 1997, 2.25 patents were pending for every one issued. By 2008, that rate had nearly tripled, to 6.6 patents pending for every one issued. The figure fell below six last year.

VCs and patents come up: Venture capitalists often require start-ups to have a patent before offering financing.

There is an allusion to life in the corporate world: “There is no company I know of that would have permitted its information technology to get into the state we’re in,” David J. Kappos, who 18 months ago became director of the Patent and Trademark Office and undersecretary of commerce for intellectual property, said in a recent interview. “If it had, the C.E.O. would have been fired, the board would have been thrown out, and you would have had shareholder lawsuits.”

This talk about "shareholder lawsuits" reminded LBE of his interview with Japanese public television about Jan-Hendrik Schon. At the top of their list of questions about Schon/Bell Labs was "where were the shareholder lawsuits against Lucent" over the Schon fraud? Of course, although Schon produced one of the most staggering frauds in the history of physics (involving US patent applications, too), there weren't any shareholder lawsuits against his employer, Lucent. Lucent management, which had boosted Schon's work to the media, was not implicated. Where was the outrage? The CEO wasn't fired, the board wasn't thrown out, and you didn't have shareholder lawsuits. As to the Kappos remark, who is kidding whom here? Patent examiners were complaining about their computer system for years.

In the end, the NYT piece reads like a string of platitudes, stitched together.

The article also included the text:

Though the office’s ranks of patent examiners and its budget have increased by about 25 percent in the last five years, that has not been enough to keep up with a flood of applications — which grew to more than 2,000 a day last year, for a total of 509,000, from 950 a day in 1997.

Sunday, February 20, 2011

McGOVERN v. RUTGERS: Appellate Division blasts Rutgers' secrecy

In the case McGOVERN v. RUTGERS, THE STATE UNIVERSITY OF NEW JERSEY, RUTGERS' BOARD OF GOVERNORS and M. WILLIAM HOWARD, JR., IN HIS OFFICIAL CAPACITY AS CHAIR OF THE RUTGERS BOARD OF GOVERNORS ONLY (2011 N.J. Super. LEXIS 32 ), Judge Baxter penned an opinion reviewing the benefits to the public of New Jersey's Open Public Meetings Act (OPMA). The decision of the Appellate Division reversed some of the trial judge's previous pro-Rutgers decision, with the Appellate Division concluding:

In sum, we have reversed the judge's across the board dismissal of the first count, which alleged that the public notice of the agenda items to be discussed at the September 10, 2008 closed meeting was defective. We have likewise reversed the dismissal of the third count, which alleged that the Board's regular practice of sequencing a brief open session, followed by a closed session of indeterminate length, followed by another open session, runs afoul of the Act's requirements.

AND

We remand this matter to the Law Division for formulation of an appropriate remedy. In fashioning a remedy, the judge shall consider the provisions of N.J.S.A. 10:4-15 and -16, and shall be guided by the principles articulated in Burnett, supra, 409 N.J. Super. at 240-46. As in Burnett, we leave to the judge's discretion the scope of the proceedings on remand, and recommend the court conduct a case management conference to determine what, if any, discovery is required.

In a different case [Sussex Commons v. Rutgers, 416 N.J. Super. 537 ], Rutgers had run afoul of New Jersey's Open Public Records Act [OPRA]. The Appellate Division further wrote in Sussex:

Our holding in Bergen County Improvement Authority was cited approvingly in Mason v. City of Hoboken, 196 N.J. 51, 67, 951 A.2d 1017 (2008), in which the Supreme Court stated that "[t]he common law definition of a public record is broader than the definition [of government record] contained in OPRA." Thus, it is now settled that nothing contained in OPRA can be construed "as affecting in any way the common law right of access." N.J.S.A. 47:1A-1; N.J.S.A. 47:1A-8.

AND

We note, however, that plaintiffs predicated their requests under both OPRA and the common law right of access. Inexplicably, the trial court's ruling only addressed plaintiffs' application under OPRA. Thus, in addition to considering plaintiffs' requests under the provisions of OPRA, the court shall also apply the legal principles articulated by the Supreme Court in Keddie v. Rutgers, supra, and its progeny to determine whether plaintiffs are entitled to any relief under the common law right of access.

[The decision had earlier stated: The University itself is subject to OPRA's requirements. See Keddie v. Rutgers, The State University, 148 N.J. 36, 43, 689 A.2d 702 (1997), (acknowledging the University as subject to OPRA's predecessor, the Right-to-Know Law, N.J.S.A. 47:1A to -4). ]

A comment was sent to californiastemcellreport on February 20, 2011:

David Jensen has properly raised issues with the lack of open discussion of CIRM matters for a long time. In the State of New Jersey, the Appellate Division handed down a decision on February 18, 2011 about how the State of New Jersey conducts its government decision-making in the open:

The OPMA, "frequently referred to as the 'Sunshine Law,' requires meetings of public bodies to be open to the public at all times, except in certain designated [instances]." Burnett v. Gloucester County Bd. of Chosen Freeholders, 409 N.J. Super. 219, 232 (App. Div. 2009). As we observed in Burnett, "New Jersey has a history of commitment to public participation in government" and the OPMA "reflects this commitment." Indeed, the OPMA opens with an emphatic declaration of the Legislature's strong commitment to the right of the public to be present at all meet-ings of public bodies because such presence enhances the decision-making process. The Act states:

The Legislature finds and declares that the right of the public to be present at all meetings of public bodies, and to witness in full detail all phases of the deliberation, policy formulation, and decision making of public bodies, is vital to the enhancement and proper functioning of the democratic process; that secrecy in public affairs undermines the faith of the public in government and the public's effectiveness in fulfilling its role in a democratic society, and hereby declares it to be the public policy of this State to insure the right of its citizens to have adequate advance notice of and the right to attend all meetings of public bodies at which any business affecting the public is discussed or acted upon in any way except only in those circumstances where otherwise the public interest would be clearly endangered or the personal privacy or guaranteed rights of individuals would be clearly in danger of unwarranted invasion.[N.J.S.A. 10:4-7.]

That said, the problems with CIRM go back to the very beginning, wherein promises were made to California voters/taxpayers that were incapable of delivery. See for example

Further, every time I read on californiastemcellreport of some researcher being lured from some other location to go to California via promises of more money, I wonder if California taxpayers ever realized they were going to be playing the role of junior George Steinbrenners in a "sport" that was not offering them any great return.

CBS Sunday Morning on February 20, 2011

Charles Osgood opened CBS Sunday Morning on February 20, 2011 with discussion of the standoff in Madison, Wisconsin and noted that Cynthia Bowers would give a report. The "cover story" ["Don't count on it"] would be by Martha Teichner on the lack of public pensions being paid in Prtichard, Alabama. The story "Fit for Fashion" contained the quote: even a kick in the back is good if you're facing the right direction. The next story previewed was by Harry Smith on Jessie Eisenberg. The next preview was on Gypsy Rose Lee, who was said to remove her clothes from the inside out. Other stories were man and machine, John Glenn, Smell the Roses.

The news stories were Madison, Wisc, unrest in the middle east, Republican Congress.

Weather: winds down, storms in the Midwest.

In the February 20 broadcast, CBS Sunday Morning had a "Sunday Journal" on the events in Madison, Wisconsin which appeared prior to the cover story on Pritchard, Alabama. Within the journal story: This is what democracy looks like in Madison, Wisconsin.

The cover story appeared next, and shared a common theme with the journal piece of public workers: no way out in Pritchard, Alabama. The juxtaposition portrayed the public worker position in a favorable light. Osgood previewed the cover story by noting the Wisconsin workers would be receiving their pensions (for now) but not so in Pritchard. The Pritchard story began with a view of Alfred Arnold, a fire fighter, who, along with his wife, have not been receiving pension checks. On the city's side: "If the money's not there, we can't pay it." There ae 27,000 residents in Pritchard. Staggeringly underfunded pension plans in many states. Joshua Rauh (sounded like "Rowe") at Northwesern University [Kellogg School ] has tracked the problem. In 1999, Prtichard declared bankruptcy; the city ignored a court order to replenish pension fund. Woulda, coulda, shoulda. In 2009, Prtichard filed for bankruptcy again. Pension checks stopped in Sept. 2009. Robert Hedge represents employees in class action suit. City now owes 2.5 million in bank payments. Charles Kennedy, captain of the police force. Pritchard mayor Ron Davis. "If the retirees are not getting anything, I don't think any of your should be paid either." A. J. Cooper Municipal Complex. One news piece which mentions Pritchard: Are Teachers "Special"? Please. Of Course Teachers Should Have Their Pensions Cut Of other discussions on the pension funding problem: The state of California's real unfunded pension debt clocks in at more than $500 billion, nearly eight times greater than officially reported.That's the finding from a study released Monday by Stanford University's public policy program, confirming a recent report with similar, stunning findings from Northwestern University and the University of Chicago.

Almanac. Feb. 20, 1962. John Glenn goes into orbit, on Friendship 7 (3 orbits, 4.5 hours). John Glenn was on "Name that Tune." Retired from space program in 1964. Returned to space in 1998, at age 77. Will turn 90 later this year. Of the original Mercury 7, only Glenn and Scott Carpenter survive.

The next story was Gypsy. Rita Braver did the story on the 100th anniversary of the birth of Gypsy Rose Lee. Above all, she was her own creation; even her name was invented. She was born in 1911, although she claimed 1914. Recent celebration at New York PUblic Library. Karen Abbott has a recent book. Gypsy was called "the Duchess" as a child. Charming but ruthless. One fateful night in Kansas City: mistakenly booked in a burlesque house (not vaudeville). gypsy as the demure stripper. Billy Minsky's in New York City. She carried a torch for Mike Todd. A fling with Otto Preminger. Edward R. Murrow did a person to person on Gypsy. Sunday Morning stated that Gypsy died at age 56 in 1970 of lung cancer.[Note in this that "CBS Sunday Morning" was using the "false" birth date of 1914, for age 56, but the centennial is referenced to 1911! "Sunday Morning" was inconsistent] Jo Weldon of New York School of Burlesque.

Osgood on deaths of Joann Siegel (model for Lois Lane), John Strauss (composer of song for "Car 54, where are you?), Len Lesser (Uncle Leo in Seinfeld).

Osgood noted that pride in our human intellect is in jeopardy. Jim Axelrod talked about the IBM challenge, involving Watson. Jennings: I for one welcome our new computer overlords. David Farucci of IBM. Empower people to make decisions. First app: David Chase collaborating with IBM to move Watson into understanding of a patient's medical diagnosis. Matin Cohen of IBM. Watson may rival the human brain, but never the human heart. 200 million pages of memory. Newest wave of computers directed to human emotions. Sherry Turkle of MIT. Robotic seal that responds to petting. Robots to keep grandpa happy.Book "Alone Together." CBS Sunday Morning neglected to mention that the current tv show Jeopardy is distributed on television by CBS Television Distribution. (see wikipedia)

Fashion by Elie Tahari in a story by Tracey Smith. Tahari's clothes are sold in more than 600 stores. The initial samples are made for tall, skinny runway models. Sales are at 100 million per year. Tahari was born in Jerusalem in 1952. In the summer of 1971, Tahari slept in Central Park. Tahari's first big hit was the tube top. Business clothing with big padded shoulders. By Sept. 2001, Tahari had an office in a building that he owned. Put a flag on a 5 story building on 5th Ave. Value of company put at 500 million. "I feel I did well."

Osgood talked about 2002 movie "Roger Dodger", which launched Jesse Eisenberg. Reluctant celebrity. Not a direct correlation between what you do and how it is received. Adventureland, Zombieland. Commands the screen without commanding a lot of attention. Like your image being used in a context not expected. SNL: hard to tell who felt most uncomfortable. Jesse's sister Haley was on Pepsi commercials. Precocious young man whose intelligence gets in the way of pursuit of a young woman. "The Living Wake" and "Holy Rollers". Website "oneupme.com"

Pulse. As to "best president", Abe Lincoln beat George Washinton, 54 vs. 28. Do you want your child to be president? Only 45% said yes.

Ben Stein. When serious inflation hits, everybody is impacted. Serious crop shortfalls. Corn, wheat prices going wild. The Fed is shoving money out the door. Pieces in place for serious inflation. The name stagflation. The tea leaves are ominous.see Ben Stein on the perils of economic inflation

Will Ryman installed steel/fiberglass roses along New York's Park Avenue. A dog's eye view of the world. Includes thorns and bugs. Real estate developer Jerry Speier. (I look for artists who don't do the same thing over and over again.)See photos

***Background on Sherry Turkle from wikipedia: Sherry Turkle is Abby Rockefeller Mauze Professor of the Social Studies of Science and Technology at the Massachusetts Institute of Technology and a sociologist. Born in New York City in 1948, she has focused her research on psychoanalysis and culture and on the psychology of people's relationship with technology, especially computer technology and computer addiction.

One 2004 study conducted by researchers at the University of Chicago Graduate School of Business found that job applicants with names that sound white receive 50 percent more callbacks than applicants with "black" names.

The study responded to real employment ads with more than 5,000 fictitious resumes. Half the resumes were assigned names like Emily Walsh; the other half got names like Lakisha Washington. After calculating for the difference in resume quality, the study concluded that "a white name yields as many more callbacks as an additional eight years of experience on a resume."

The catchphrase may have entered the political lexicon of the Soviet Union but there's no indication that it came from Lenin. The Library of Congress itself is on record saying that there's no trace of it in any of Lenin's works.

Within the IP realm, the phrase might be applied by the leaders of IT behemoths to various intellectual property academics.

In an AP article titled Freshmen spur GOP-run House on big spending cuts, one finds the text:

They rejected an initial draft advanced by the leadership and produced by Rep. Hal Rogers, R-Ky., chairman of the Appropriations Committee, saying it did not cut deeply enough.

Not much discussed in the proposed patent reform package is the implicit linkage, in economic terms, between "first inventor to file" and "post grant review." In the game plan of patent reform, the people now running interference procedures (needed in the current "first to invent" system but not needed in first to file) would be mapped into the new system needed to run "post grant review." That is, same people doing different things, still costing money. Given that "post grant review" would be used A LOT MORE than interference proceedings, there is the possibility of a lot more people needed if this patent reform bill passes. More people mean more money.

Will the freshmen GOP House members buy into this?

The EPA did NOT fare well with the GOP House. The AP article noted:

The Environmental Protection Agency took hits from Republicans eager to defend business and industry from agency rules they say threaten job creation and the economy. The EPA's budget was slashed by almost one-third, and then its regulatory powers were handcuffed in a series of votes.

Friday, February 18, 2011

The information presented on the dashboard reports data on the grants issued by the Federal government to research institutions (“investments”), and the publications and patent activity produced by researchers funded by those investments (“outputs”).

In a decision that puts public entities on greater notice about what information they must provide at public meetings, the three-member [appellate] panel said Rutgers ran "afoul" of the state’s Open Public Meetings Act, dubbed the "Sunshine Law" because of the light it is supposed to shine on governmental bodies.

The court also criticized the board’s practice of "sequencing" — holding long closed-door sessions between public sessions — saying it "subverts the very purposes the ‘Sunshine Law’ was designed to achieve."

The factual issue concerned Rutgers University’s $102 million stadium expansion. The appellate division said discussions about new policies for the athletic department should have been held in public.

The article had a quote:

Bruce Rosen, a Florham Park-based media attorney, said the decision is a clear victory for the public."The message here is make sure what’s public is public and what’s private is private," he said. "Don’t try to mix the two. These boards have to be sensitive to the public."

In this multi-district litigation patent case, the plain- tiff Ronald A. Katz Technology Licensing LP (“Katz”) appeals from final judgments entered by the United States District Court for the Central District of California in a group of consolidated cases. The judgments held numerous claims from Katz’s patent portfolio either invalid or not infand remand.

Katz lost on due process:

We reject Katz’s due process argument. Katz has not shown that the claim selection procedure the district court employed was inadequate to protect Katz’s rights with respect to the unasserted claims.6 To make out a due process claim, Katz must demonstrate that the district court’s claim selection procedure risked erroneously depriving it of its rights and that the risk outweighed the added costs associated with a substitute procedure. See Mathews v. Eldridge, 424 U.S. 319, 335 (1976).

As to other theories:

Turning to Katz’s other arguments, we hold that the court did not violate the statutory presumption that each claim is independently presumed valid, see 35 U.S.C. § 282, or the “rebuttable presumption that different claims are of different scope,” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1326 (Fed. Cir. 2003). While different claims are presumed to be of different scope, that does not mean that they necessarily present different questions of validity or infringement. And the court only required Katz to demonstrate that new claims presented unique questions of validity or infringe- ment. The court explained that with respect to infringe- ment, Katz “should be prepared to show that a non- infringement defense raised by a specific defendant group to a currently asserted claim does not apply in substan- tially the same manner to a newly asserted claim.”

WMS Gaming arose:

The court invalidated those claims pursuant to the analysis set forth in WMS Gam- ing, Inc. v. International Game Technology, 184 F.3d 1339 (Fed. Cir. 1999), and Aristocrat Technologies Australia Pty Ltd v. International Game Technology, 521 F.3d 1328 (Fed. Cir. 2008), because the specifications of each of the patents at issue disclosed only general purpose processors and did not disclose the algorithms that those processors used to perform the recited functions.

and

Several of Katz’s claims are clearly indefinite under the principles of WMS Gaming, Aristocrat, and Harris.

But Katz had some victories:

We reach a different conclusion with respect to the district court’s analysis of claims 96, 98, and 99 of the ’863 patent, claims 11 and 18 of the ’547 patent, claim 19 of the ’551 patent, and claim 61 of the ’285 patent. As to those claims, we conclude that the district court inter- preted the principles of WMS Gaming, Aristocrat, and Harris too broadly, so we vacate the court’s indefiniteness ruling and remand to the district court for claim construc- tion and application of the correct rule.

and

The appellees contend that the district court’s broad rule of indefiniteness is supported by language from Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008). In that case, this court stated that “a means-plus- function claim element for which the only disclosed struc- ture is a general purpose computer is invalid if the speci- fication fails to disclose an algorithm for performing the claimed function.” Id. at 1367, citing WMS Gaming, 184 F.3d at 1337-38. When viewed in context, it is clear that the quoted language applied only to computer- implemented means-plus-function claims in which the computer would be specially programmed to perform the recited function. As authority, the court cited WMS Gaming, which was limited to a computer implementing a specific function. And the claim at issue in Net MoneyIN recited a particular function not disclosed simply by a reference to a general purpose computer. That claim involved a credit card authorization system with a “means for generating an authorization indicia in response to queries containing a customer account number and amount.” Net MoneyIN, 545 F.3d at 1365.

IPXL comes up:

The district court held that Statistical Interface claims 1, 2, and 83 of the ’893 patent are indefinite under IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005), because they claim both an apparatus and a method of use. In IPXL, this court addressed a claim that covered a system with “an input means” and required a user to use the input means. This court held that the claim was indefinite because it was unclear “whether infringement . . . occurs when one creates a system that allows the user [to use the input means], or whether infringement occurs when the user actually uses the input means.” Id.

Written description comes up:

Written description is a factual inquiry. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he test requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art. Based on that inquiry, the specification must describe an inven- tion understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. The purpose of the written description requirement “is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inven- tor's contribution to the field of art as described in the patent specification." Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345 (Fed. Cir. 2000).

Priority issues come up:

Once an accused infringer establishes obviousness by clear and convincing evidence, the burden shifts to the patentee to prove priority over the invalidating prior art. See PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305 (Fed. Cir. 2008). To be entitled to the priority date of an earlier application, the patentee must show that “the application necessarily discloses that particular device.” Hyatt v. Boone, 146 F.3d 1348, 1354 (Fed. Cir. 1998) (internal quotation omitted). Therefore, in order for the claims to have priority over Szlam, the parent application needed to disclose the invention of those claims: receiving caller-entered signals, looking up data corresponding to that caller in a file, and displaying the located data.

KSR is mentioned:

See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) (“[I]f a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the technique is obvious unless its actual applica- tion is beyond his or her skill.”).

On 21 Jan 2011, D Ct entered an order for Computer Packages Inc. (CPI) to pay an $8.378 million jury verdict. CP[ appealed the order and the underlying judgment. The district court did not act on CPi's request for a bond. The CAFC granted a temporary stay until the district court addressed the bond issue.

Thursday, February 17, 2011

Separately, a patent infringement case filed against Valence continues in court. Hydro-Quebec filed the original complaint on Feb. 14, 2006. It had its last hearing in January.Valence was founded in 1989 and employs about 490 people. The company increased revenue to $13.8 million in the quarter ended Dec. 31, 2010, compared with $4.1 million during the same three months in 2009.

The U.S. Energy Department's inspector general says Lawrence Livermore National Laboratory in California failed to keep track of samples of dangerous drugs, including cocaine, amphetamines, opium and black tar heroin. Some drugs were missing. But in one case the lab found more opium than records showed had been purchased legally. The inspector general's report says the accounting lapses created "an opportunity for improper or illegal use."Some employees at Livermore, one of the federal government's top science labs, handle as many as 42 different kinds of dangerous drugs. They are required under federal law to track their use closely. The drugs are used for bio-medical research and forensic science, and in the lab's health clinic for the treatment of workers there.

Also on Livermore:

Air Products' mobile hydrogen fueling technology is helping Lawrence Livermore National Laboratory (LLNL) achieve its strategy of an energy sustainable future and a cleaner environment. At the Livermore, Calif. based national security laboratory, Air Products technology and equipment is fueling two hydrogen powered shuttle buses used to transport employees and visitors at LLNL's main site.(...)Air Products has more than 50 years of hydrogen experience and is on the forefront of hydrogen energy technology development. Air Products has an extensive patent portfolio with over 50 patents in hydrogen dispensing technology.

Cross-reference the text about Cristiano Ronaldo and his "baby contract":

Lawyer Filipe Viana Lousa, a university lecturer, added: “The Portuguese constitution establishes that children should not be separated from their parents, and the UN Convention on the Rights of the Child says the child has a right to live with either the father or mother, unless those parents have failed in their duty of care or through a court order.”

to ABC Nightly News stories on 15-16 Feb 2011 on Japanese mothers taking children back to Japan. The UN Convention on the Rights of the Child doesn't change Japanese law.

As in patent law, the law of the nation governs what happens in that nation.

And, as to patent law, if the US wants to run a "first to invent" patent system because it is best for the US, then the US ought to do just that.

There's some buzz about a statue of Michael Jordan, wearing a Bulls uniform with the number 32 (as distinct from 23).

Within a sports.yahoo story: Though we couldn't pin down the exact reason for the error, there are plenty of theories. It could be an intentional error to avoid trademark infringement (which probably doesn't work since copying the Bulls jersey itself is illegal).

One suspects that the specific number itself is not part of the trademark registration, and that a misnumbering is neither here nor there. Selling a statue involving an official Chicago Bulls uniform, with any number, might be a problem, as the statue buyer might think the NBA was the source.

But, how sophisticated is the buyer? Doesn't Jimmy Kimmel know that Michael Jordan's number was 23? If he bought a statue with a number 32 did he think it really came from the NBA? Who knows?

If one ever wondered how poorly written court orders can cause real damage, consider the case of Anthony Graves who would have received $1.4 million in compensation if only the words "actual innocence" had been included in the judge's order that secured Graves's release from prison. Although District Attorney Parham believes Graves is innocent, he asserts the words "actual innocence" carry no strict legal meaning

Details of the case may be found in an article by Pamela Colloff:http://www.texasmonthly.com/2010-10-01/feature2.php

A Reuters article by Diane Bartz and Thomas Ferraro titled Senate to vote on patent reform after break suggests Majority Leader Reid plans to bring the Senate patent reform bill to the Senate floor after lawmakers return from a week-long recess set to start on Friday, February 18.

The authors featured the following aspects of the bill:

The bill would give judges a major role in determining how important a particular patent is to a product, so that infringing minor patents would not lead to huge damages.

The bill also would give a patent to the first inventor to file, rather than the first to invent, making the patent application process easier for companies who apply for patents in multiple countries.

Bartz and Ferraro write: Other provisions in this year's 99-page bill aim to prevent bad patents from being issued by allowing third parties to provide information on why an application should be rejected. Guess they are unaware of Rule 99.

Dunkin' Donuts is currently running an ad featuring a sign in the background saying "Patent Office" and a tag line about re-inventing the chocolate donut.

Note the clock is about 3:17 and the patent office guy behind the counter (who is short and nerdlike) is eating a donut. After taking a bite, the patent office guy stamps a piece of paper, implying a patent on the "chocolate donut (re)invention" has been granted. The sign in the background does say merely "Patent Office," as distinct from "United States Patent and Trademark Office."In the "real world," there are over 700,000 patent applications that have not been examined. Maybe applicants should attach donuts to them.

Wednesday, February 16, 2011

From DW World: A Bremen law professor has accused Defense Minister Karl-Theodor zu Guttenberg of "brazen plagiarism" and "deceit" in several passages of his 2006 doctoral thesis.

According to Andreas Fischer-Lescano's comments in Wednesday's Süddeutsche Zeitung newspaper, passages of Guttenberg's paper were almost identical to previously published texts by other authors. He has accused Guttenberg of using the information without citing the original authors.

Following along the lines of Penn State business school applicants who plagiarized text from an article on "Principled Leadership," some doctors have been snagged for unattributed copying in their own passages related to "Ethics": "Ethics and End-of-Life Issues" (pp. 357-379) and "Ethics and Research in Surgery" (pp. 379-398).

The journal which retracted the copied work is Current Problems in Surgery, put out by Elsevier. The paper has some midwest connections: The article titled "Ethical Issues in Surgical Treatment and Research," was co-authored by Rene Lafreniere of the University of Calgary, Alberta surgeon Dr. Wayne Rosen (who also teaches at the University of Calgary), Dr. Peter Angelos, at Northwestern University in Chicago, and philosopher Timothy Murphy of the University of Illinois.

The copying was uncovered NOT by editors or referees, but by a student. The student contacted the original author, who in turn complained to the journal's editor-in-chief (Samuel Wells) ultimately leading to a retraction.

The editor INITIALLY had described the article:

the "excellent" report "should be required reading for all health care providers, but especially for medical students and house officers, who are in such a formative part of their careers."

IBM's Watson blunders on Jeopardy on 15 Feb. 2011

After having built a considerable lead over its two human opponents, IBM's Watson computer gave an unbelievably stupid answer to the final Jeopardy question on February 15, 2011, which was in the category "US Cities." With clues about the major airport named for a World War II hero and the second airport named for a World War II battle, Watson responded with "Toronto," not normally considered a US city. Separately, Watson, and the humans, didn't know about Felipe Segundo of Spain.

Tuesday, February 15, 2011

A former Sequenom patent agent and his brother pleaded guilty Tuesday [15 Feb. 2011] in San Diego to conspiring to use inside information to trade stock options in the publicly traded biotechnology company.

Ex-employee Aaron Scalia, of San Diego, and his sibling, Stephen Scalia of Baltimore, entered their guilty pleas to conspiring to commit securities fraud before U.S. Magistrate Judge Ruben Brooks.

Their pleas are subject to final acceptance by U.S. District Judge Barry Ted Moskowitz.

"Right of Publicity" explored on "The Good Wife" on 15 Feb 2011

In an alternative fictional variant on the movie The Social Network, The Lockart Gardner lawyers try a defamation suit on behalf of their young computer whiz, but then switch to a right of publicity theory. They hit paydirt when they explore the product placements in the movie, showing the movie to be commercial, rather than a transformative work of art.

The episode is titled "Net Worth," and it includes F. Murray Abraham as the lawyer representing the movie studio.

Blake and Kalinda have an interesting encounter.

A line: the last refuge of the loser is to not be wrong.

The show ends with Will's second message to Alicia, with Will giving an untrue account.

About Me

I'm a patent lawyer located in central New Jersey. I have a J.D. from the University of Chicago and a Ph.D. from Stanford University, where I studied graphite intercalation compounds at the Center for Materials Research. I worked at Exxon Corporate Research in areas ranging from engine deposits through coal and petroleum to fullerenes. An article that I wrote in The Trademark Reporter, 1994, 84, 379-407 on color trademarks was cited by Supreme Court in Qualitex v. Jacobson, 514 US 159 (1995) and the methodology was adopted
in the Capri case in N.D. Ill. An article that I wrote on DNA profiling was cited by the Colorado Supreme Court (Shreck case) and a Florida appellate court (Brim case). I was interviewed by NHK-TV about the Jan-Hendrik Schon affair. I am developing ipABC, an entity that combines rigorous IP analytics with study of business models, to optimize utilization of intellectual property. I can be reached at C8AsF5 at yahoo.com.